Ex parte RAO - Page 7




            Appeal No: 1997-1820                                                                         
            Application No: 08/313,941                                                                   
            unpredictable such that applicant's disclosure would need to                                 
            provide an example of each catalyst claimed in order to be                                   
            enabling.  Accordingly, the examiner's rejection under 35 USC                                
            § 112, first paragraph, is REVERSED.                                                         
                                   The 35 USC § 103 rejections                                           
                        The examiner rejects claims 1-13, 17-20, and 24                                  
            under 35 USC § 103 as having been obvious over Miller et al.                                 
                      3              4          5                6                                       
            (Miller) , Richardson , Goleva , and Hassler .                                               
                  Miller teaches a process for the hydrogenation of                                      
            fluorohalocarbons.  Miller discloses that "(a) further                                       
            important feature is the nature of the catalytic material                                    
            employed and the compositions thereof.  We find that the                                     
            reaction is particularly well promoted by the use of a                                       
            palladium on activated carbon catalyst" (Miller at 2:26-30).                                 
            The examiner acknowledges that Miller does not teach a                                       
            catalyst containing less than about 200 ppm phosphorous and                                  


                 3     Canadian Patent 593,529, issued 1 March 1960.                                    
                 4     Richardson, James T., Principles of Catalytic Development, Plenum                
            Press, 205-207 (1989).                                                                       
                 5     A.A. Goleva et al., Russian Journal of Physical Chemistry, 44(2),                
            290-291 (1970).                                                                              
                 6     John W. Hassler, Activated Carbon, Chemical Publishing Company,                  
            Inc., 343-345 (1963).                                                                        
                                                  -7-                                                    





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